IPO Webinar on Indefiniteness

The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Indefiniteness after Samsung v. Prisua" on April 2, 2020, from 2:00 to 3:00 pm (ET).  Mark Feldstein of Finnegan, Kirby Lee of Ecolab, and Robert Sterne of Sterne, Kessler, Goldstein & Fox, PLLC will consider the many implications of Samsung v. Prisua and possible tactics for parties in or considering IPR proceedings including:

• Should patent challengers avoid IPRs on any claims that might be found indefinite?
• What other types of indefinite claims may eventually be found proper to evaluate for anticipation and obviousness in an IPR?
• What is the status now of “means-plus-function” claims at the PTAB?
• Will the petitioner be estopped from challenging claims as anticipated or obvious in other proceedings when the PTAB can't reach a final decision on patentability claims because the claims are indefinite?
• Approaches to try to litigate indefiniteness before filing an IPR, and
• Efforts to assume definiteness for purposes of the IPR, while expressly reserving the right to later assert indefiniteness in the district court.

The registration fee for the webinar is $135 (IPO member) or $150 (non-member) (government and academic rates are available upon request).  Those interested in registering for the webinar can do so here.

Comments

[Paul F. Morgan]

If a sued party has found really good prior art, the first-listed tactic question: “Should patent challengers avoid IPRs on any claims that might be found indefinite?” seems draconian and costly for some types of indefiniteness in view of this and other possible other developments. Leaving only a very costly full trial defense?
“Means-plus-function” claims that are indefinite due to the absence of any specification teaching of any such “means” are a very different form of claim indefiniteness than a claim indefiniteness due to an unresolvable ambiguity in the claim language itself. The former could simply be IPR handled by applying 102 or 103 art against the broadest possible scope of the “means for” statement itself. If the latter type of indefiniteness is limited to only two possibilities the prior art could be required to be asserted against both to be considered.